In NFC Technology v. Matal (September 2017), a panel of the Federal Circuit reversed the PTAB’s finding of obviousness based on the patent owner’s failure to antedate a prior art reference. The PTAB held that a third party’s fabrication of a prototype did not inure to the benefit of the inventor for purposes of reduction to practice, reasoning that the fabricator had physically created the prototype and the patent owner could not corroborate the inventor’s testimony that he provided the details of the patented subject matter to the fabricator. The CAFC found that the PTAB relied on inconsistencies with the underlying documents, and further found that even if detailed invention information is not found in the underlying documents, the rule of reason test allows corroboration if other facts support the inventor’s testimonial narrative of conception and reduction to practice. Specifically, several pieces of information found within different underlying documents supported the inventor’s account of conception and reduction to practice, and also led the CAFC to question: who, if not the inventor, designed the prototype? There was no evidence of record that another employee at the inventor’s workplace or an employee of the fabricator made an inventive contribution, nor was there evidence that any other employee communicated with the fabricator other than the inventor. The case was remanded to the PTAB for other determinations that may still lead to obviousness.
09.26.2017